FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:
The Complainant contends the disputed domain name is confusingly similar to its well-known and distinctive trademark “REPETTO”, registered and used since 1977. The disputed domain name incorporates the entirety of the Complainant's trademark in association with the English term “shop”.
The Complainant contends the addition of a gTLD “.com” and of the term “shop” is not sufficient to avoid the finding that the domain name is confusingly similar to its trademark. To the contrary, it only reinforces the impression that the disputed domain name is connected to the Complainant. The Complainant therefore contends that disputed domain name is confusingly similar to the trademark “REPETTO” in which the Complainant has prior rights.
The Complainant also points out that the Respondent does not have any rights or legitimate interest in the disputed domain name and states that, as found in WIPO case No. D2003-0455, “Croatia Airlines d.d. v. Modern Empire Internet Ltd.”, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
The Complainant states that the Respondent is not affiliated with nor authorized by the Complainant, that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that it is not related in any way to the Complainant’s business, as the Complainant does not carry out any activity for, nor has any business with, the Respondent. The Complainant asserts, furthermore, that the Respondent is not commonly known as “Repetto”.
The Complainant points out that the disputed domain name < repettoshop.com > has been redirected to a web site displaying the name of Complainant’s competitor “Jimmy Choo” and products (bags, shoes etc.) related of the Complainant.
The Complainant contends that the Respondent has no rights in the disputed domain name since “REPETTO” is a well-known and distinctive trademark of the Complainant and it appears that the Respondent is seeking to profit from the goodwill and reputation of the Complainant’s trademark.
The Complainant contends that its trademark “REPETTO” is well known in the world, especially in China where its products are marketed through the website “www.repetto.cn”.
In addition, Google or Baidu searches for the term “REPETTO” display results in relation with the Complainant. The Complainant thus contends that the Respondent could not ignore the Complainant and its trademark.
As to the use of < repettoshop.com >, the Complainant states that on the corresponding web site the name of a Complainant’s competitor (“Jimmy Choo”) is displayed and the Complainant’s products are offered for sale at a discounted price.
The Complainant therefore states that, by this use, the Respondent is creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent's site and services.
The Complainant also contends that the Respondent’s purpose of this registration was to divert the Complainant’s customers to its web site where counterfeit products are offered for sale without the consent of the Complainant. The Complainant highlights that using domain names to facilitate the sale of counterfeit goods is strong evidence of bad faith (Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019).
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